IP: Do we need an image rights registry?

The Bailiwick of Guernsey, an island 30 miles off the coast of France, is home to just 65,000 people. It is loyal to the British Crown, but is not part of the U.K. or a member of the European Union. That independence gives its legislature a degree of freedom which has allowed it to become a successful off-shore tax haven. Now, it is seeking to establish the world’s first registry of image rights.

The Image Rights (Bailiwick of Guernsey) Ordinance 2012 (the Image Rights Law) is likely to be approved by the Guernsey Parliament this summer. When in force, rights holders will be able to register their image rights in a formal, official database.

An image right is the right to control the commercial use of a person's identity and associated images. The concept is already familiar to intellectual property lawyers, as it is similar to the right of publicity under U.S. law and the (much narrower) doctrine of passing off under English law. Some jurisdictions recognize these rights under statute or common law, but nowhere is there a formal registry.

A registry, the Guernsey theory goes, would enable image rights to be dealt with as a transferable property right. That property could then be easily mortgaged, licensed or assigned to third parties.

But does that warrant a registry? The “name and likeness” (and other attributes) of a celebrity are commonly licensed in endorsement deals. Further, personalities often register their names, signatures, logos and other indicia as trademarks, frequently held by corporations. Therefore, we already have an international, transferable structure that enables the commercial exploitation of such rights.

To some extent.

Guernsey’s proposals go much further than anything possible under current trademark practice. The Image Rights Law would give more extensive protection than registered trade mark rights, as infringement would not be restricted to use of the registered images in relation to specified goods or services.

Further, the definition of a registerable image is extraordinarily wide. In addition to covering a person’s likeness and appearance, it will be possible to register all kinds of characteristics, such as voice, mannerisms, facial expressions, gestures or "any other distinctive characteristic or personal attribute” (registered image).

Under the proposed law a registered image could relate to any natural person, living or deceased, or could even extend to fictional characters. The Image Rights Law also anticipates registration of joint personalities and groups, allowing bands and sports teams to register their collective image. The personality of a person (legal or natural) may be registered up to 100 years after his death or dissolution.

Infringement occurs if the registered image is used commercially without the proprietor’s consent, or if a similar image is used where there is likelihood of association with the registered personality. There also is a dilution offense which occurs when a person "without due cause, takes unfair advantage of, or is detrimental to, the distinctive character, repute or value of that registered personality."

There are defenses in the proposed Image Rights Law to ensure that registered images could be used where they are in the public interest, to protect the freedom of the press and for educational and private use. In particular, "acts done privately which derive no commercial or financial benefit" would generally not be infringing.

Sceptics will be quick to point out that there are problems with the Image Rights Law. It is so all-encompassing that it lends itself to ridiculously over-broad and imprecise registrations.

More importantly, what is the point of a registered right which is only enforceable on one small island?

Indeed, it is Guernsey’s reputation as a tax haven which could be the downfall of the Registry. There may be good IP arguments as to why an image rights registry could be useful, but some will be suspicious as to the motivation behind the legislation.

Is Guernsey’s Image Rights Registry simply a tool for tax planning? Is it intended as a way to further disassociate the rights of an individual from the person in order to transplant them off-shore to a kindly tax regime? Perhaps it is effective in doing so, but if I were a celebrity, I wouldn’t particularly want to be the first test case.

Having said that, the projected cost of registration is low (around $1,500). That will no doubt encourage quite a number of registrations on the basis that an extra registered right (and indeed possibly even an extra argument to use with the tax man), might be worth that small outlay.

Regardless of the island’s motivation, Guernsey’s initiative is undoubtedly an innovative development in intellectual property and it will be extremely interesting to see if other jurisdictions follow their lead.